Sorting Through the America Invents Act

As we mentioned briefly last June, major changes have come to the United States patent system in the form of the America Invents Act (AIA), which may significantly alter the manner in which researchers seek protection for their technologies.

Outside of the U.S., priority is usually given to the party that is the first to file the patent application for a given invention, even if they were not the first ones to actually create it.   Until recently, in the U.S., rights were generally afforded to the first to invent a particular technology, regardless of when any related patent application was filed.

Naturally, many saw the U.S. system as being more favorable to smaller entities and non-commercial institutions.  Given that filing and prosecuting a patent application can be incredibly expensive, having rights vested in those who were first to invent afforded those parties more time to develop their creations before availing the patent process, which would thus maximize their investment before the United States Patent and Trademark Office (USPTO).

Under the AIA, the U.S. will now fall in line with the rest of the world, with priority predominantly given to those persons who were first to file a patent application on the technology at issue.  The natural byproduct of the change has been the presumption that inventors (and, more specifically and perhaps derisively, their attorneys) will file patent applications with greater frequency and in greater numbers to ensure that rights are being protected.  Since, as mentioned earlier, the application process is costly, many feel that the AIA will favor deep-pocketed entities who can afford to effectuate filings at the drop of a hat.

That being said, one of the ‘exceptions’ to the new first to file regulations concerns public disclosures of novel technologies:

Let’s say that Dr. Crosby discovers a novel method of scanning the brain for abnormal activity in May 2013, and files a related application in October 2013.  Without knowing of the work of Dr. Crosby, Dr. Ovechkin develops a similar method of brain scanning in June 2013, publishes his findings in August 2013 and finally files his patent application in December 2013.

Under the old U.S. law, Dr. Crosby would, all things equal, have priority rights to the technology since he was the first to invent.  Under the new system, even though Dr. Crosby was also the first to file, Dr. Ovechkin would actually be entitled to priority since he independently published his novel concept prior to Dr. Crosby’s patent application.  As such, the August publication could then be used as prior art (i.e. ‘It’s already been done!’) to disallow Dr. Crosby’s application.  Had Dr. Ovechkin published his findings after October 2013, or hadn’t done so at all, Dr. Crosby would have rights to the invention.

Consequently, two of the biggest takeaways from the new laws appear to be that (1) entities will likely file applications more often, or at least earlier in the research process; and (2) researchers will likely also seek to publish their findings earlier in the research process so as to avail the exception noted above.

However, these pose a dilemma for institutions like JHSPH and our brethren.  As our motto states, our goal is to continue “Protecting Health, Saving Lives – Millions at a Time.”  Our PIs expend time and energy primarily to better the public good, not to generate products that will be commercially viable (though we do acknowledge the existence and vital role of our Tech Transfer office).

By definition, patent applications avail applicants the opportunity to exclude others from using or copying their invention.  In attempting to get feet in the door by filing applications as quickly as possible, universities will be forced to walk a fine line between protecting their assets and proactively inhibiting the activities of their colleagues, the latter of which is a mindset more suited for large commercial corporations.

Additionally, with an increased premium placed on publication, PIs and their Tech Transfer offices will have to communicate even more regarding any proprietary information that may be disclosed.  As a consequence, an article could be submitted much earlier than might be advisable, and might not necessarily reflect the most complete assessment of the work performed.  Once again, the ‘altruistic’ nature of funded research will butt heads with the increased commercial considerations of any such activities.

In the end, as the new regulations continue to be phased in, universities and similar non-commercial research organizations will have to determine the best way to safeguard their rights, while also allowing their scientists and other personnel to perform their research free of any undue encumbrances.